JD Scoop

On September 8, 2011, the United States Senate passed the America Invents Act. The much debated Patent Reform bill is now on its way to President Obama for his signature.

From law firms on JD Supra:

- Congress Passes America Invents Act (Morgan Lewis):
"After years of debating the need for patent reform, Congress has acted. Today, the Senate passed the House version of the "America Invents Act" (the Act). The bill will now go to the President, who is expected to sign it into law almost immediately. The Act represents the most sweeping overhaul of U.S. patent law in almost 60 years and will effect dramatic changes in a number of key areas. Below is a summary of a few key provisions..." Read update>>

- First-to-File or First-to-Invent? New Patent Reform Act Changes the Game (Sutherland):
"This landmark piece of legislation fundamentally changes the U.S. patent system by awarding patents to the first inventor to file an application with the U.S. Patent and Trademark Office (USPTO). Thus, in order to stay competitive, inventors of all sizes will need to file patent applications quickly and frequently in order to stay a step ahead of their competition. Moreover, the Act provides for additional third-party input during both the pre- and post-issuance phases of the patent process. These provisions require entities to monitor published applications and newly issued patents more closely in order to take swift action in accordance with the new processes..." Read update>>

- Patent Reform Now One Signature Away: Senate Sends Historic Bill to President's Desk (Bracewell & Giuliani):
"If signed into law, the America Invents Act would transition the U.S. Patent system from a first-to-invent system to a first-inventor-to-file system. The first-inventor-to-file system would give inventorship priority to the first individual inventor to file a patent application for a particular invention. That system follows the procedures already in place in Europe but would contrast sharply with the U.S.'s current system, which gives priority to the first inventor in some circumstances even if that inventor is not the first to file an application with the USPTO..." Read update>>

- Ten Things You Should Know About Patent Reform (Lane Powell):
"The law is designed to encourage investment in leading edge technology and spur the formation and growth of existing and new enterprises. Changes in the law encompass "first to file" priority for inventions, methods to block the granting of a patent, streamlined challenges to existing patents, modified aspects of lengthy and expensive patent infringement disputes to specialized administrative tribunals, and other issues. Below is an easy-to-follow 'top 10 list' of what you need to know about the new law..." Read update>>

- The America Invents Act: A Race to the Patent Office (Warner Norcross & Judd):
"...In contrast, Senator Maria Cantwell described the Act as a 'big corporation patent giveaway that tramples on the rights of small inventors.' Similarly, the advocacy group American Innovators for Patent Reform (AIPR) said the Act would 'stifle innovation in the U.S.' and that it was "bought and paid for by large corporations which see being forced to pay royalties for technology invented by others as an unfair business practice." Read update>>

- Patent Prosecution Strategies Under the Smith-Leahy America Invents Act (Schnader):
"The "first-to-file" rule makes it imperative that all inventors are aware of the importance of filing patent applications early, and are diligent in doing so. An invention does not need to be reduced to practice before an application for patent is filed; consider using a preliminary "short-form" invention disclosure document to encourage and allow inventors to quickly put decision makers on notice of the development of innovative technology..." Read update>>

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We've been compiling Patent Reform legal reading lists of relevant analysis and updates. Check back; we'll release additional roundups as new work is posted. In the meantime, for your reference:

The Bill>>

- America Invests Act (Full Text Copy) - Patent Reform Bill H.R. 1249

The Roundups>>

- Patent Reform: 8 Things to Know About the America Invents Act
9/13: As we wait for President Obama's signature, eight preliminary things you need to know about this historic patent reform legislation...

- America Invents Act: A Patent Reform Primer For The Rest Of Us
A roundup of recent law firm updates explaining the implications of the Patent Reform bill in its most simple form. An introductory primer...

- America Invents Act: Friday Five Look at Patent Law Reform
A recent roundup, explaining the impending patent reforms in five quick bytes, with accompanying legal updates...

- Patent Reform 2011 Reading List: 'America Invents Act' Passes House
A roundup of law firm commentary and updates after the Patent Reform bill passed the House earlier this summer...

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